• Legacy Separators, LLC v. Halliburton Energy Services, Inc.Institution denied
  PTAB · Dec 4, 2015 · IPR2015-01526 · APJ James J Mayberry · IPR · Institution

  The Board denied institution on all challenged claims 1–17 because the petition did not show a reasonable likelihood of prevailing on any asserted anticipation or obviousness ground.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below upon considering the Petition and the Preliminary Response, we conclude that the information presented in the Petition does not establish a reasonable likelihood that Legacy will prevail in challenging any of claims 1–17 of the ’215 patent. We do not authorize an inter partes review to be instituted as to any challenged claim.” slip op. at 2

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “and second chambers, for restricting fluid flow to generate a pressure drop in said production fluid and to separate gas and liquid as said production fluid enters said second chamber.” Ex. 1001, 4:61–66. Legacy recognizes that this claim limitation invokes the requirements of 35 U.S.C. § 112, paragraph 6, and we agree.2 See Pet. 20. Accordingly, we construe this limitation by 2 Paragraph 6 of 35 U.S.C. § 112 was replaced with newly designated § 112(f) when § 4(c) of the America Invents Act (ALA), Pub.L. No. 112–29, took effect on September 16, 2012. Because the application resulting in the determining the claimed function and identifying the structure disclosed in the specification that corresponds to the means for performing that function. See Kemco Sales, Inc. v. Control Papers Co., 208 F.3d 1352, 1360 (Fed. Cir. 2000); see also In re Donaldson Co., 16 F.3d 1189, 1193 (Fed. Cir. 1994) (“[P]aragraph six applies regardless of the context in which the interpretation of means-plus-function language arises, i.e., whether as part of a patentability determination in the PTO or as part of a validity or infringement determination in a court.”).” slip op. at 8

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “Lee ’193 discloses the recited means of claim 1. First, Legacy fails to support its contention that diffuser 42 necessarily restricts flow because it increases pressure in the production fluid. Indeed, a diffuser operates in the exact opposite manner—it increases the cross-sectional flow area that a fluid passes through, which causes the fluid to decrease in velocity and increase in pressure. Further, Legacy’s general citation to Dr. Wooley’s declaration fails to lend support to its position. We are directed to nothing in Dr. Wooley’s declaration, other than a conclusory statement that Lee ’193 anticipates claim 1, to lend support to the position that the disclosure that diffuser 42 increases fluid pressure necessarily means that diffuser 42 restricts fluid flow. Accordingly, we find that Lee ’193’s disclosure that fluid pressure increases as it passes through diffuser 42 does not support a finding that diffuser 42 necessarily restricts fluid flow. More significantly, the means-plus-function recitation of claim 1 requires that the corresponding means restrict fluid flow to generate a pressure drop in the production fluid—that is, a consequence of the restricted flow is to generate a pressure drop in the fluid. As Legacy recognizes, diffuser 42 causes an increase in the fluid pressure, not a drop in the fluid pressure as the production fluid passes through the diffuser. See Pet. 27; see also Prelim. Resp. 20 (“On the contrary, . . . the diffuser in Lee ’193 increases the pressure of the fluid.”). Legacy’s argument that diffuser 42 functions to generate a pressure drop in the production fluid is equally unavailing. As an initial matter, Legacy’s position contradicts its position that diffuser 42 increases the pressure in the production fluid. Legacy fails to adequately explain how diffuser 42 can act to both increase pressure in the production fluid and cause a pressure drop “across diffuser 42.” See Pet. 27. Legacy attempts to avoid this contradiction by asserting that “[t]he increased pressure of the production fluid leaving the diffuser 42, in comparison to the reduced pressure in the vented separation chamber, generates a pressure drop in the production fluid entering the separation chamber.” Id. at 29–30 (emphasis added). That is, Legacy argues that the pressure drop function is achieved because the pressure of the production fluid as it leaves diffuser 42 is greater than the pressure in the fluid within the separator section housing centrifuge 44. However, as argued by Legacy, this pressure profile would result in a pressure drop in the fluid across the second chamber, not across diffuser 42. Significantly, the means of claim 1 must function to restrict fluid flow to generate a pressure drop in the production fluid—that is, the generated pressure drop results from restricting the flow in the means.” slip op. at 14

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “As discussed above in connection with our analysis of claim 1 as anticipated by Lee ’193, Legacy fails to persuade us that Lee ’193 anticipates claim 1—specifically, Legacy fails to persuade us that Lee ’193 includes the recited means-plus function limitation of claim 1. Further, Legacy fails to explain how Carle remedies this deficiency. Accordingly, on the record before us, we conclude that Legacy has failed to show a reasonable likelihood of prevailing in its assertion that claim 5 is unpatentable over Lee ’193 and Carle under Ground 2.” slip op. at 21

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 6,761,215

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